(Directive 89/104/EEC - Trade-mark law - Exhaustion of the rights of the proprietor of the trade mark - Licence agreement - Sale of goods bearing the trade mark in disregard of a clause in the licence agreement - No consent of the proprietor of the mark - Sale to discount stores - Damage to the reputation of the trade mark)

Reference for a preliminary ruling — Cour de Cassation (France) — Interpretation of Articles 5, 7, and 8(2) of First Council Directive No 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Concept of the exhaustion of the rights of the trade mark proprietor — Sale, by the licensee, of goods bearing the trade mark in disregard of a provision of the licensing agreement prohibiting certain methods of marketing — Sale to wholesalers and discount stores — Damage to the trade mark’s prestige — No consent by the trade mark proprietor

Operative part of the judgment

1.

Article 8(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, is to be interpreted as meaning that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in a licence agreement prohibiting, on grounds of the trade mark’s prestige, sales to discount stores of goods such as the ones at issue in the main proceedings, provided it has been established that that contravention, by reason of the situation prevailing in the case in the main proceedings, damages the allure and prestigious image which bestows on those goods an aura of luxury.

2.

Article 7(1) of Directive 89/104, as amended by the Agreement on the European Economic Area, is to be interpreted as meaning that a licensee who puts goods bearing a trade mark on the market in disregard of a provision in a licence agreement does so without the consent of the proprietor of the trade mark where it is established that the provision in question is included in those listed in Article 8(2) of that Directive.

3.

Where a licensee puts luxury goods on the market in contravention of a provision in a licence agreement but must nevertheless be considered to have done so with the consent of the proprietor of the trade mark, the proprietor of the trade mark can rely on such a provision to oppose a resale of those goods on the basis of Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, only if it can be established that, taking into account the particular circumstances of the case, such resale damages the reputation of the trade mark.